Protecting your business with trade marks

Intellectual property | Print Article

November 2018

Trade marks are a great way to product the intellectual property in your business. Once registered, a trade mark gives you the exclusive right to use that mark throughout New Zealand. That gives you confidence to invest in your brand for the long term.

What is a trade mark?

When people think of trade marks, they commonly think of a business name. However, a trade mark can be words, an image or logo, shapes, animations, colours and even sounds and smells. Trade marks can be registered in respect of any mark used in your business, provided that you use the trade mark (or intend to do so). A common misconception about trade marks is that unregistered trade marks may be represented by the ™ symbol, while only registered trade mark are permitted to use the ® symbol. The most common are words or logos being the business name or names of specific goods and services. Generally speaking, a word trade mark is preferable over an image trade mark given that it offers wider protection. However, it is common to register both at the same time.

Trade mark requirements and specifications

There are several important requirements that a trade mark must meet in order for it to achieve registration on the trade marks register. The key requirements are that it must not be: descriptive or superlative; misleading or confusing and must not be too similar to another registered trade mark. For example, a business selling apples could not register ‘Fruit’ or ‘Super Amazing Fruit’ because these are descriptive and superlative respectively. On the other hand, there has previously been a successful application for the word ‘Fruit’ in relation to real estate.

All trade marks have a specification, that is, a description of the goods and services in respect of which the trade mark is registered. Specifications are separated into different classes of goods and services and it is common to register in respect of more than one class (depending on how the trade mark is intended to be used). The specification should be as wide as possible, but only in respect of those things which the trade mark will actually be registered for. It is more difficult to obtain a broadly-worded specification and it is common to drop a class from the specification in order to achieve registration when there is a conflicting trade mark already registered.

Preparing the trade mark’s specification can be tricky and technical, and it is recommended that a lawyer prepares this for you.

Registration process

The registration process for a trade mark is as follows:

  1. Submit the trade mark application with the Intellectual Property Office (IPONZ).
  2. IPONZ will examine the application and give you notice of either acceptance or refusal within 15 working days.
  3. If the application was accepted by IPONZ, the trade mark will be publicly advertised in the next edition of ‘The Journal’ publication, and a person will have three months from the advertisement date to lodge an opposition to registration of the Trade Mark.
  4. If no objections to the application are received, the trade mark will proceed to becoming registered at the prescribed date.

Search and preliminary advice

IPONZ offers a useful search and preliminary advice service. By submitting an application online, IPONZ will undertake a search of the Trade Marks register for any conflict and will also give advice as to whether your trade mark is unique enough to your industry to obtain registration.